More than five years ago, BMG Canada Inc. and a number of other music companies (“BMG”) took a run at file sharers in Canada and received a chilly reception for their trouble. Their attempts to get ISPs to divulge the names and addresses of KaZaA and iMesh file sharers were rejected by the Federal Court – primarily because BMG produced inadequate evidence linking IP addresses to file sharers and copyright infringement.
In late 2011, Voltage Pictures LLC (“Voltage”), the distributor of the movie The Hurt Locker, attempted the same thing and succeeded. The Federal Court ordered three ISPs (Cogeco, Videotron, and Bell - none of which opposed the request) to disclose the names of certain of their subscribers which Voltage Pictures had said were illegally sharing that movie.
Now, in late 2012, Voltage is suing Teksavvy to have them release names and addresses of people on their networks who are purportedly infringing Voltage’s copyright. Unlike the earlier case, Teksavvy has said publically it will fight this request.
It seems that file sharing lawsuits have arrived in Canada.
2005: THE BMG CASE
Back in 2005, BMG assembled a list of IP addresses of people who had been sharing music over the KaZaA and iMesh peer to peer networks. It determined which ISPs controlled those IP addresses, and then brought a motion requesting that those ISPs identify the individuals using those IP addresses so that the individuals could be sued for copyright infringement. This type of motion is sometimes referred to as an “equitable bill of discovery”.
The Federal Court denied the motion, holding that BMG had not adduced sufficient evidence of copyright infringement (see 2004 FC 488).
BMG appealed, but the Federal Court of Appeal sided with the lower court, upheld the privacy rights of the alleged infringers, and refused to order the ISPs to disclose their identities (see 2005 FCA 193).
The Court of Appeal clarified that BMG had to satisfy either the test under Rule 238 of the Federal Courts Rules (dealing with examination of non-parties) or the following test for equitable discovery, before the court would order third parties (in this case ISPs) to cough up the names and addresses of the alleged copyright infringers (2005 FCA 193 at para. 30):
- the applicant must establish a bona fide case against the unknown alleged wrongdoer;
- the person from whom discovery is sought must be in some way involved in the matter under dispute, he must be more than an innocent bystander;
- the person from whom discovery is sought must be the only practical source of information available to the applicants;
- the person from whom discovery is sought must be reasonably compensated for his expenses arising out of compliance with the discovery order in addition to his legal costs;
- the public interests in favour of disclosure must outweigh the legitimate privacy concerns.
The Court held that the principles of equitable discovery would apply both to a request under Rule 238 and a request for equitable discovery at common law (2005 FCA 193 at para. 30).
The lower court had held that BMG had failed to meet step (a), (c) and (e) of this test, and so was not entitled to the names of the alleged infringers. The Federal Court of Appeal generally agreed. It reasoned as follows about those three prongs of the test:
- bona fide case
The lower court had identified three deficiencies in the case which BMG presented:
- First, BMG’s primary affiant, the President of a media enforcement company, had not provided the “best evidence” of infringement that could have been submitted, and his affidavit contained too much hearsay. No evidence was provided from the employees who had actually collected the evidence purportedly proving the file sharing.
The Court of Appeal agreed (see 2005 FCA 193 at para. 35). Much of the evidence submitted was hearsay and contrary to Rule 81 (see 2005 FCA 193 at para. 20).
- Second, BMG’s evidence did not connect the pseudonyms used by the alleged infringers and those peoples’ IP addresses. For example, BMG alleged that the user “Geekboy” on the KaZaA network used the IP address 22.214.171.124, but nothing in BMG’s evidence explained how this link had been drawn. The Court held that it would have been “irresponsible” to order disclosure of Geekboy’s name without having this information.
The Court of Appeal did not comment on this point.
- Finally, the lower court had held that evidence of a prima facie case of copyright infringement was required on this kind of motion.
The Court of Appeal held that this standard had been set too high. Applicants on this kind of motion only required a bona fide claim of copyright infringement to succeed (2005 FCA 193 at para. 32-34).
- only practical source of the information
The lower court had held that BMG had not shown that the ISPs were the only practical source of the information requested, and noted that BMG ought to have adduced evidence as to why they could not get this information from KaZaA or iMesh (2004 FC 488 at para. 31).
The Court of Appeal agreed. On these kinds of motions, clear evidence should be adduced that there is no other practical source of the information requested (2005 FCA 193, at para. 35).
- public interest in disclosure outweighs privacy
While the lower court noted that normally copyright owners would be entitled to obtain names of unidentified copyright infringers (2004 FC 488, para. 42), the evidence submitted in this case was simply not strong enough to allow the Court to conclude that the public interest outweighed the privacy interests of the file sharers.
The Court of Appeal focussed much of its attention on this point. It felt there was a balancing to be made here, between the rights of IP holders and the privacy rights of people who were alleged to have infringed those rights.
 Thus, in my view, in cases where plaintiffs show that they have a bona fide claim that unknown persons are infringing their copyright, they have a right to have the identity revealed for the purpose of bringing action. However, caution must be exercised by the courts in ordering such disclosure, to make sure that privacy rights are invaded in the most minimal way.
The Court of Appeal’s primary concern with the particular facts of this case was that the link between IP address and the particular person using that IP address weakened over time. That is, the more time between the alleged infringement and asking for the names of the people behind the particular IP addresses, the more chance that a new person would be using that IP address, not the infringer.
 If there is a lengthy delay between the time the request for the identities is made by the plaintiffs and the time the plaintiffs collect their information, there is a risk that the information as to identity may be inaccurate. Apparently this is because an IP address may not be associated with the same individual for long periods of time. Therefore it is possible that the privacy rights of innocent persons would be infringed and legal proceedings against such persons would be without justification. Thus the greatest care should be taken to avoid delay between the investigation and the request for information. Failure to take such care might well justify a court in refusing to make a disclosure order. [emphasis added]
In this case, although the Court of Appeal did not specifically comment on this point, some months had passed between the alleged infringement and the request for the names of those alleged infringers (see 2004 FC 488, para. 42):
 ... In this case the evidence was gathered in October, November and December 2003. However, the notice of motion requesting disclosure by the ISPs was not filed until February 11, 2004. This clearly makes the information more difficult to obtain, if it can be obtained at all, and decreases its reliability. No explanation was given by the plaintiffs as to why they did not move earlier than February 2004. Under these circumstances, given the age of the data, its unreliability and the serious possibility of an innocent account holder being identified, this Court is of the view that the privacy concerns outweigh the public interest concerns in favour of disclosure.
2011: THE FIRST VOLTAGE PICTURES CASE
In 2011, Voltage Pictures LLC (“Voltage”), the distributor of the movie The Hurt Locker, tried to do what BMG failed to, six years earlier. Voltage brought a motion against three ISPs - Cogeco, Videotron, and Bell - asking the Court to order them to disclose the names and addresses of subscribers at particular IP addresses which Voltage asserted were sharing The Hurt Locker. None of the three ISPs named (Cogeco, Bell and Videotron) contested the motion (paragraph 29).
In a short eight page decision (2011 FC 1024 – the Federal Court of Appeal BMG decision was roughly twice as long), the Federal Court granted the motion and ordered the ISPs to disclose the requested subscriber information.
Tthe Federal Court appears in this case to have had no trouble in concluding that the evidence before it met the test for equitable discovery, even though it appears to contain some weaknesses, including some identical to those in the BMG case evidence. For example:
- Voltage’s affiant appears not to have personally viewed the media files that the unknown alleged infringers were sharing in order to verify they were, in fact, copies of The Hurt Locker. Rather, the affiant simply states that “members of his team” have done so, without identifying those members or explaining why those team members could not have provided their own affidavits.
- No evidence was adduced to say that the ISPs are the only practical source of the information requested. In the BMG case, the Court asked why BMG hadn’t provided evidence to show why it couldn’t get the names and addresses of the alleged infringers from KaZaA or iMesh. In this case, there were blanket statements that only the ISPs could identify the subscribers from their IP addresses, but no explanation of why the technology of the BitTorrent protocol made it impossible to get this information from elsewhere.
- Also, Voltage’s affiant stated that “every peer who is copying or who has copied a file is simultaneously distributing it to every other peer” (para. 10). This statement may be slightly technologically misleading, as it implies that each peer is in fact a distributor. In actual fact, it is unlikely that a peer using the BitTorrent protocol would be simultaneously distributing a file to all other peers. It would be more accurate to say that a peer is simultaneously offering to distribute its files to all other peers.
In the Voltage case, the Court appears to have taken a more bright line approach to infringement. Privacy interests appear to have been given less weight than they were in BMG, the evidence scrutinized less harshly for omissions, and more emphasis was placed on the idea that defendants should not be allowed to hide behind the anonymity of the Internet (para. 25).
Another difference between the two cases was that in Voltage, the request for subscriber information was brought immediately after the copyright infringement claim had been commenced. In BMG, by contrast, there had been a significant delay between bringing the claim and requesting the subscriber information from the ISPs. The Court of Appeal in BMG specifically noted that a particular IP address may not be associated with a particular person for a long period of time, and there was a risk that the wrong person could be identified if there was a significant delay between the date the file was shared and the date the subscriber information pertaining to that particular IP address was requested.
2012: VOLTAGE PICTURES TRIES AGAIN
It now appears that Voltage is yet again trying its hand at equitable discovery.
On December 7, 2012, Voltage asked the Federal Court to order Teksavvy, a smaller Canadian ISP, to disclose the names and addresses of the people behind certain IP addresses who had, between September 1 and October 30, 2012, purportedly infringed Voltage’s copyright by distributing its movies on BitTorrent P2P (peer to peer) networks. Voltage, of course, wants the information to sue those individuals (and likely to attempt to settle with them for money payments.)
The motion is to be heard December 17, 2012, in Toronto. Although it is too earlier to make any predictions as to how the motion will be resolved, there are two interesting twists to the current motion as compared to Voltage’s 2011 attempt:
First, Teksavvy has stated publically it will contest the motion and will not disclose private information except in accordance with a Court order. Cogeco, Videotron and Bell failed to contest Voltage’s 2011 motion, which may have been an influential factor eading the Court to grant discovery of the third parties’ names and addresses.
Second, there is a one-and-a-half-month delay between the collection of the IP addresses (which ended October 31, 2012 per the Court filing) and the bringing of this motion. The Court of Appeal in BMG made clear that a one and a half month delay between collection of IP addresses and bringing a motion to compel disclosure was fatal to that request. In Voltage’s 2011 case, it brought the motion immediately after collecting the IP addresses.
Given that ISPs regularly purge old IP address data, and the fact that IP addresses can change over time, it remains to be seen whether this delay will prove fatal to the current request.
Even though these types of lawsuits started off on the wrong foot in 2004, there appears to be a current upswing in their popularity, both in the US and now in Canada. The results of these preliminary cases will determine the legal landscape for equitable discovery of Internet infringement cases in the future. Since it is almost certain that the goal is to obtain names and addresses of the individual infringers and then settle with them, the results of these very earlier cases will be absolutely determinative of individual privacy rights on the Internet.